Petition for Writ of Certiorari — Traxcell Technologies, LLC, Petitioner v. Sprint Communications Company LP, et al.

APPENDIX INDEX

A.

Judgment by the court of appeals, dated July

13, 2023, of District Judge Robert Schroeder’s two

Orders adopting the Magistrate Judge’s award of

attorney’s fees to Sprint and Verizon ................ App. 2

B.

Order of District Judge Robert Schroeder,

dated November 10, 2022, adopting the Magistrate

Judge’s Memorandum Order awarding Sprint its

attorney’s fees from August 1, 2019, to December 31,

2019 .................................................................... App. 4

C.

Order of District Judge Robert Schroeder,

dated December 22, 2022, adopting the Magistrate

Judge’s Memorandum Order awarding Verizon its

attorney’s fees from August 1, 2019, through October

31, 2019 .............................................................. App. 8

D.

Memorandum Order of the Magistrate Judge,

dated March 29, 2022, awarding Sprint its attorney’s

fees from August 1, 2019, to December 31, 2019 . App.

12

E.

Memorandum Order of the Magistrate Judge,

dated March 29, 2022, awarding Verizon its

attorney’s fees from August 1, 2019, through October

31, 2019 ............................................................ App. 27

F.

Order of the court of appeals, dated August 29,

2023, denying petitioner Traxcell’s petition for Panel

rehearing or for rehearing en banc.................. App. 43

App. 1

APPENDIX A

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

TRAXCELL TECHNOLOGIES, LLC,

Plaintiff-Appellant

v.

AT&T INC.,

Defendant-Appellees

SPRINT COMMUNICATIONS COMPANY LP,

SPRINT SPECTRUM, LP, SPRINT SOLUTIONS,

INC., VERIZON WIRELESS PERSONAL

COMMUNICATIONS, LP,

Defendants-Appellees

2023-1246, 2023-1436

Appeals from the United States District Court for

the Eastern District of Texas in Nos. 2:17-cv-00718RWS-RSP, 2:17-cv-00719-RWS-RSP, 2:17-cv-00721RWS-RSP, Judge Robert Schroeder III.

JUDGMENT

App. 2

WILLIAM PETERSON RAMEY, III, Ramey

LLP, Houston, TX, argued for plaintiff-appellant.

BRIAN DAVID SCHMALZBACH, McGuire

Woods LLP, Richmond, VA, argued for all defendantsappellees.

Defendants-appellees

Sprint

Communications Company LP, Sprint Spectrum, LP,

Sprint Solutions, Inc. also represented by DAVID

EVAN FINKELSON; TYLER VANHOUTAN,

Houston, TX.

JACOB KEVIN BARON, Holland & Knight

LLP, Boston, MA, for defendant-appellee Verizon

Wireless Personal Communications, LP. Also

represented by JOSHUA C. KRUMHOLZ, ALLISON

LUCIER.

THIS CAUSE having been heard and considered, it

is

ORDERED and ADJUDGED:

PER CURIAM (PROST, HUGHES, and

CUNNINGHAM, Circuit Judges).

AFFIRMED. See Fed. Cir. R. 36.

ENTERED BY ORDER OF THE COURT

July 13. 2023

Date

/s/ Jarrett B. Perlow

Jarrett B. Perlow

Clerk of the Court

App. 3

APPENDIX B

IN THE UNITED STATES DISTRICT COURT FOR

THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

TRAXCELL TECHNOLOGIES, LLC.,

Plaintiff,

v.

Case No. 2: l 7-cv-00718-RWS-RSP

(Lead Case)

AT&T CORP. and AT&T MOBILITY LLC,

Defendants.

ORDER

Before the Court is Plaintiffs Objections to

Memorandum Order Granting in Part Sprint

Communications Company, LP and Sprint Solutions,

Inc.’s Motion for Attorneys’ Fees filed by Plaintiff

Traxcell Technologies, LLC. Docket No. 522.

Defendants Sprint Communications Company, LP

and Sprint Solutions, Inc. (together, “Sprint”) have

filed a response to Traxcell’s objections. Docket No.

525.

For non-dispositive matters, “[a] party may

serve and file objections to [a magistrate judge’s]

order within 14 days after being served with a copy.”

FED. R. CIV. P.72(a). “A party may not assign as

error or a defect in the order not timely objected to.”

Id. “The district judge in the case must consider

timely objections and modify or set aside any part of

App. 4

the order that is clearly erroneous or is contrary to

law.” Id.

Traxcell’s first objection is that the Magistrate

Judge was required to issue a Report and

Recommendation “as an award of fees is a post-trial

matter and dispositive on the issue of attorney’s fees.”

Docket. No. 522 at 4. This Court has determined that

post-trial motions for attorneys’ fees qualify as nondispositive motions. See, e.g., Uniloc USA, Inc. v.

Acronis, Inc., No. 6:15-CV- 1001, 2020 WL 4726288,

at *2 (E.D. Tex. June 19, 2020); Morrison v. Walker,

No. 1:13-CV-00327, 2018 WL 9812710, at *3 (E.D.

Tex. Aug. 1, 2018); Weber Aircraft, L.L.C. v.

Krishnamurthy, No. 4:12-CV-666, 2014 WL

12601032, at *2 (E.D. Tex. Dec. 11, 2014).

Therefore, the Court rejects Traxcell’s first

argument and finds that the Magistrate Judge did not

err by issuing a memorandum order.

Next, Traxcell offers a series of unpersuasive

arguments objecting to the Court’s factual findings.

Docket No. 522 at 5-7. First, Traxcell’s reliance on

Teva Pharms. USA, Inc. v. Sandox, Inc.. 574 U.S. 318

(2015), to support its argument that its delayed

objections were not untimely is misplaced because it

addresses a court of appeal’s standard of review of a

lower court’s findings on claim construction, not the

district court’s review of objections under Rule 72. See

Id. at 331-32. Thus, the Court finds that the

Magistrate Judge correctly found that Traxcell

waived its objections to the claim construction order

by not filing its objections timely. The mere possibility

App. 5

of further appeal does not rescue baseless positions

from being untimely. Second, Traxcell’s remaining

arguments either raise the same arguments the Court

has already addressed and rejected or amount to

objecting to the legal conclusion the Magistrate Judge

determined from the facts, rather than the facts

themselves. Traxcell should have known its patent

infringement theories were unsupported when the

Court issued a report and recommendation on

summary judgment in the Huawei case (Traxcell

Tech., LLC v. Huawei Tech. USA Inc. 2:17-cv-42RWS-RSP, Report & Recommendation Docket No.

386, adopted Docket No. 411), which involved claim

constructions for “location” and “first computer.”

Therefore, the Court does not find any error with the

Magistrate Judge’s factual findings.

Finally, turning to the Magistrate Judge’s

conclusion that this case is exceptional, “[a]n

exceptional case is simply one that stands out from

others with respect to the substantive strength of a

patty’s litigating position .... District courts may

determine whether a case is exceptional in the caseby-case exercise of their discretion, considering the

totality of the circumstances.” Octane Fitness. LLC v.

ICON Health & Fitness, Inc., 572 U.S. 545, 554

(2014). After conducting a de novo review of the

briefing on Sprint’s Motion for Attorneys’ Fees

(Docket No. 475), the Magistrate Judge’s Order

(Docket No. 519), and Traxcell’s Objections, the Court

agrees that this case is exceptional under 35 U.S.C. §

285. Traxcell continued to pursue theories that it

knew or should have known were baseless. It filed

meritless motions, constantly reurging positions that

App. 6

had already been rejected. Traxcell’s conduct, when

viewed considering the totality of the circumstances,

renders this case exceptional under 35 U.S.C. § 285.

Therefore, the Court OVERRULES Traxcell’s

Objections (Docket No. 522) and ADOPTS Judge

Payne’s Memorandum Order (Docket. No. 519). It is

therefore ORDERED that Traxcell pay to Sprint its

fees from August 1 to December 31, 2019, which

amount to a total of $784.529.16, within 30 days of

this Order.

Furthermore, based on this Order, the Court

DENIES-AS-MOOT Sprint’s Motion for Order to

Show Cause (Docket No. 526).

So ORDERED and SIGNED this 10th day

of November, 2022.

ROBERT W. SCHROEDER III

UNITED STATES DISTRICT JUDGE

App. 7

APPENDIX C

IN THE UNITED STATES DISTRICT COURT FOR

THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

TRAXCELL TECHNOLOGIES, LLC.,

Plaintiff,

v.

Case No. 2: l 7-cv-00718-RWS-RSP

(Lead Case)

AT&T CORP. and AT&T MOBILITY LLC,

Defendants.

ORDER

Before the Court are Plaintiff Traxcell

Technologies, LLC’s Objections to Memorandum

Order Granting in Part Verizon’s Motion for

Attorneys’ Fees (Docket No. 523), and Objections to

the Memorandum Order Granting Verizon’s Motion

for Reconsideration (Docket No. 533). Verizon has

filed a response to each. Docket Nos. 524, 534.

For non-dispositive matters referred to a

magistrate judge, “[a] party may serve and file

objections to the order within 14 days after being

served with a copy.” FED. R. CIV. P. 72(a). “A party

may not assign as error a defect in the order not

timely objected to.” Id “The district judge in the case

must consider timely objections and modify or set

aside any part of the order that is clearly erroneous or

is contrary to law.” Id.

App. 8

Traxcell’s first objection is that the Magistrate

Judge should have issued a Report and

Recommendation “as an award of fees is a post-trial

matter and dispositive on the issue of attorney’s fees.”

Docket No. 523 at 4. Like most courts, this Court has

determined that post-trial motions for attorney’s fees

qualify as non-dispositive motions. See, e.g., Uniloc

USA, Inc. v. Acronis, lnc., No. 6:15-CV- 1001, 2020

WL 4726288, at *2 (E.D. Tex. June 19, 2020);

Morrison v. Walker, No. l:13-CV-00327, 2018 WL

9812710, at *3 (E.D. Tex. Aug. 1. 2018); Weber

Aircraft, L.L.C. v. Krishnamurthy, No. 4:12-CV-666,

2014 WL 12601032, at *2 (E.D. Tex. Dec. 11, 2014).

The Court, therefore, rejects Traxcell’s first argument

and finds that the Magistrate Judge did not err by

issuing a memorandum order rather than a

recommendation.

Next, Traxcell offers a series of unpersuasive

arguments objecting to the Court’s factual findings.

Docket No. 523 at 5-7. First, Traxcell’s reliance on

Teva Pharmaceuticals USA, Inc. v. Sandox, Inc., to

support its argument that its delayed objections were

not untimely is misplaced because it addresses an

appellate court’s standard of review of a lower court’s

findings on claim construction, not the district court’s

review of objections under Rule 72. See Id. at 331-32

(citing Teva Pharms. USA, Inc. v. Sandox. Inc., 574

U.S. 318(2015)). The Comt finds that the Magistrate

Judge correctly found that Traxcell waived its

objections to the claim construction order by not

timely filing its objections. The mere possibility of

further appeal does not rescue a baseless position

from being untimely. Second, Traxcell’s remaining

App. 9

arguments either raise the same arguments the Court

has already addressed and rejected, or amount to

objecting to the legal conclusion the Magistrate Judge

reached from the facts rather than the facts

themselves. Traxcell should have known its patent

infringement theories were unsupported when the

report and recommendation on summary judgment

issued in Traxcell Tech., LLC v. Huawei Tech. USA

Inc., 2: l 7-cv-042-RWS-RSP, Docket No. 386, adopted

Docket No. 411, construing “location” and “first

computer.” Therefore, the Court does not find error

with the Magistrate Judge’s factual findings.

Finally, turning to the Magistrate Judge’s

conclusion that this case is exceptional, “an

exceptional case is simply one that stands out from

others with respect to the substantive strength of a

party’s litigating position .... District courts may

determine whether a case is exceptional in the caseby-case exercise of their discretion, considering the

totality of the circumstances.” Octane Fitness, LLC v.

ICON Health & Fitness, Inc., 572 U.S. 545, 554

(2014). After conducting a de novo review of the

briefing on Verizon’s motion for attorney’s fees

(Docket No. 476), the Magistrate Judge’s order

(Docket No. 520), and Traxcell’s objections (Docket

No. 523), the Comt agrees that this case is exceptional

under 35 U.S.C. § 285. Traxcell continued to pursue

theories that it knew or should have known were

baseless. It filed meritless motions and argued

positions that had already been rejected. Traxcell’s

conduct, viewed considering the totality of the

circumstances, renders this case exceptional under 35

U.S.C. § 285.

App. 10

Traxcell’s objections to the Memorandum

Order granting Verizon’s Motion to Reconsider argue

the same positions addressed above and provide no

further arguments. Docket No. 533. The Court

therefore

OVERRULES Traxcell’s objections (Docket

Nos. 523, 533) and ADOPTS the Magistrate Judge’s

Memorandum Order and Amended Order (Docket

Nos. 520, 532). It is therefore

ORDERED that Traxcell is pay Verizon’s

attorney’s fees from August l, 2019 through October

31, 2019, which amount to a total of $489,710.00,

within 30 days the entry of this Order. Furthermore,

based on this Order, the Court

DENIES-AS-MOOT Verizon’s

Order to Show Cause. Docket No. 536.

Motion

for

So ORDERED and SIGNED this 22nd day

of December, 2022.

ROBERT W. SCHROEDER Ill

UNITED STATES DISTRICT JUDGE

App. 11

APPENDIX D

IN THE UNITED STATES DISTRICT COURT FOR

THE EASTERN DISTRICT OF TEXAS MARSHALL

DIVISION

TRAXCELL TECHNOLOGIES, LLC.,

Plaintiff,

v.

AT&T CORP. and AT&T MOBILITY LLC,

Case No. 2:17-cv-00718-RWS-RSP

(LEAD CASE)

SPRINT COMMUNICATIONS

COMPANY. LP, SPRINT SPECTRUM, LP,

and SPRINT SOLUTIONS, INC.,

Case No. 2:17-cv-00719-RWS-RSP

(MEMBER CASE)

VERIZON WIRELESS PERSONAL

COMMUNICATIONS, LP,

Defendants.

Case No. 2:l 7-cv-00721-RWS-RSP

(MEMBER CASE)

App. 12

MEMORANDUM ORDER

Before the Court is the Motion for Attorneys’

Fees filed by Sprint Communications Company, LP,

and Sprint Solutions, Inc. (collectively, “Sprint”). Dkt.

No. 475. Having considered the briefing, Sprint’s

motion is GRANTED IN PART.

I.

Background

On October 31, 2017, Plaintiff Traxcel1

Technologies, LLC filed its complaint, which alleged

infringement of U.S. Patent Nos. 8,977,284 (the ‘284

Patent”), 9,510,320 (the ‘320 Patent), 9,642,024 (the

‘024 Patent) (the “Network Tuning Patents”), and

U.S. Pat. No. 9,549,388 (the ‘388 Patent”)

(collectively, the “Asserted Patents”). Dkt. No. 1. The

present case-which is a consolidated case with lead

case Traxcell v. AT&T Corp. et al., Case No. 2:l7-cv00718-RWS-RSP (hereinafter the “AT&T Case”)-is

the second in a series of cases involving the Network

Tuning Patents; therefore, the Court will review the

facts from the first case because they relate to issues

raised by the parties.

a.

Huawei Case

Prior to the filing of this suit, Traxcell

previously brought claims of infringement of the

Network Tuning Patents against two parties in this

Court: Nokia Solution and Networks US LLC and

Nokia Solutions and Networks Oy (collectively,

“Nokia”) in Traxcell v. Nokia, Case No. 2:l7-cv-00044RWS-RSP (hereinafter the “Nokia Case”), Dkt. Nos. 1,

App. 13

10, and against Huawei Technologies USA Inc. in

Traxcell v. Huawei et al., Case No. 2:17-cv-00042RWS-RSP (hereinafter “Huawei Case”). Huawei, Dkt.

No. 1. The Huawei Case and Nokia Case were

consolidated for pre-trial matters and the Huawei

Case was designated the lead case.

On January 7, 2019, the Court issued a claim

construction order in the Huawei case. Huawei, Dkt.

No. 261. Relevant to this motion, the Court construed

the terms “computer” and “location” and also

determined that Claim 1 of the ‘284 Patent was

indefinite. Id. The Court construed “computer” to

mean “single computer” and “first computer” to mean

“first single computer.” Dkt. No. 261 at 18. These

constructions were based on the patentee’s

statements in the prosecution history of the ‘284

Patent. Id. at 15, 17.

For the term “location,” the Court construed

the term to mean “location that is not merely a

position in a grid pattern.” Dkt. No. 261 at 23. The

Court reached this construction also based on

statements made by the patentee in the prosecution

history of the asserted patent. Id. at 22. Based on

those statements, the Court concluded that the patent

applicant distinguished the claimed invention from

the prior art references and represented that the

“location” of the claimed invention is therefore not

merely a position in a grid pattern. Id.

Traxcell failed to timely object to the Court’s

claim construction order, and the Court later denied

Traxcell’s motion for leave to file objections because

App. 14

Traxcell provided no reason for its 6 month delay.

Huawei, Dkt. No. 405.

On May 15, 2019, the Court issued a Report

and Recommendation (the “Huawei R&R”) that

recommended granting summary judgment of noninfringement to Nokia because the Court found that

there was no genuine dispute of material fact that

Nokia’s products did not infringe the location and

computer limitations. Huawei, Dkt. No. 386. As to the

location limitation, the Court found that Traxcell’s

infringement theory was based on 50-meter-by-50meter bins and geographic cells. Id. at 9. The Court

found that bins and cells amounted to merely a

position in a grid pattern, which is contrary to the

Court’s construction. Id. As to the computer

limitation, the Court found that Traxcell’s evidence

showed that multiple computers were needed to meet

the claim limitations. Id. at 12. Additionally, the

Court found that “prosecution history estoppel bars

the application of the Doctrine of Equivalents here,

and [Traxcell] is precluded from asserting that the

‘first computer’ and ‘computer’ limitations may be

satisfied by multiple computers.” Id. at 14.

On May 29, 2019, Traxcell timely filed

objections to the Court’s recommendation of summary

judgment of non-infringement. Huawei, Dkt. No. 389.

Although Traxcell did file objections to the Court’s

application of prosecution history estoppel, the

objections were directed towards the Court’s

construction of computer, not the Court’s grant of

summary judgment itself. Id. at 5-8. When the

District Judge adopted the recommendation of

App. 15

summary judgment on December 11. 2019, he

specifically found that Traxcell’s objections to the

Claim Construction Order were untimely and

therefore waived. Huawei, Dkt. No. 411 at 3.

b.

AT&TCase

Turning to this case, the Court issued a claim

construction order on April 15, 2019. Dkt. No. 171.

Traxcell agreed in this case to the same construction

of “location” that was issued in the Huawei Case,

which was “a location that is not merely a position in

a grid pattern” Id. at 12-13. Although Traxcell offered

new arguments as to the computer limitation, the

Court ultimately provided the same construction for

computer as it did in the Huawei Case. Id. at 16-18.

Finally, the Court again found Claim I of the ‘284

Patent was indefinite. Id. at 27. As in the Huawei

Case, Traxcell failed to timely object to the Claim

Construction Order. Dkt. No. 451 at 3.

On May 7, 2019, Traxcell received a Certificate

of Correction for the ‘284 Patent. Dkt. No. 182. After

receiving the Certificate of Correction, Traxcell

moved to assert the corrected Claim I of the ‘284

Patent by filing a motion for leave to file an amended

complaint. Dkt. No. 188. The Court denied the motion

because the Court determined during claim

construction that Claim l contained “a means-plusfunction term and that the specification did not

adequately disclose sufficient structure to perform the

recited function, making Claim 1 indefinite ... and

[that] the proposed amendments to the complaint do

App. 16

not cure the indefiniteness issues regarding the

means- plus-function term.” Dkt. No. 209 at 2.

On June 19, 2019, Traxcell filed a motion for

leave to supplement its infringement contentions

with a Doctrine of Equivalents theory although the

Court made it clear in the Huawei R&R that

prosecution history estoppel barred the Doctrine of

Equivalents. Dkt. No. 210. On July 22, 2019, the

Court denied Traxcell’s motion for leave to

supplement its infringement contentions for two

reasons: (I) Traxcell did not show good cause for filing

the supplemental infringement contentions and (2)

the Court concluded that “the proposed supplemental

infringement contentions would be futile” in light of

the Court’s claim construction order in the Huawei

Case. Dkt. No. 254 at 3. Furthermore, the Court

stated in its Order denying leave that “Traxcell has

not identified any persuasive reason why the Court

would reach a different conclusion within this case.

As such, the Court concludes that prosecution history

estoppel similarly applies in this case and precludes

the application of the Doctrine of Equivalents,

making the proposed supplemental infringement

contentions futile.” Id. at 4.

On October 7, 2019, the Court issued a Report

and Recommendation that recommended granting

summary judgment of non-infringement to Sprint

because Traxcell failed to create a genuine dispute as

to whether Sprint’s products infringed the asserted

claims. Dkt No. 445. On April 15, 2020, the District

Judge overruled all of Traxcell’s objections and

App. 17

adopted the Report and Recommendation. Dkt. No.

471.

II.

Legal Standard

Pursuant to the Patent Act, in “exceptional

cases,” a district court “may award reasonable

attorney fees to the prevailing party.” 35 U.S.C. § 285.

An “exceptional case” is “simply one that stands out

from others with respect to the substantive strength

of a party’s litigating position ... or the unreasonable

manner in which the case was litigated.” Octane

Fitness, LLC v. ICON Health & Fitness. Inc., 572 U.S.

545, 134 S. Ct. 1749, 1756, 188 L. Ed. 2d 816 (2014);

see also Highmark Inc. v. Allcare Health Mgmt. Sys.,

Inc., 572 U.S. 559, 134 S. Ct. 1744, 1748, 188 L. Ed.

2d 829 (2014) (noting that “the word ‘exceptional’ in §

285 should be interpreted in accordance with its

ordinary meaning” (citing Octane Fitness, 134 S. Ct.

at 1755)).

District courts must determine whether any

particular case is “exceptional” in a “case-by- case

exercise of their discretion, considering the totality of

the circumstances.” Octane Fitness, 134 S. Ct. at l 756.

Whether a case is “exceptional” or not “is a factual

determination,” Forcillo v. Lemond Fitness, Inc., 168

F. App’x 429, 430 (Fed. Cir. 2006), and the court must

make its determination by a “preponderance of the

evidence,” Octane Fitness, 134 S. Ct. at 1758 (rejecting

the prior requirement that a patent litigant establish

its entitlement to fees under § 285 by ..clear and

convincing” evidence).

App. 18

In assessing the “totality of the circumstances,”

courts may consider factors such as “frivolousness,

motivation, objective unreasonableness (both in the

factual and legal components of the case) and the need

in particular circumstances to advance considerations

of compensation and deterrence.” Octane Fitness, 134

S. Ct. at 1756 n.6 (citing Fogerty v. Fantasy, inc., 510

U.S. 517, 534 n.9, 114 S. Ct. 1023, 127 L. Ed. 2d 455

(1994) (addressing a similar fee-shifting provision in

the Copyright Act). A party’s conduct need not be

independently sanctionable to warrant an award of

fees under § 285; however, fee awards should not be

used “as a penalty for failure to win a patent

infringement suit.” Romag Fasteners, Inc. v. Fossil,

Inc., 866 F.3d 1330, 1753, 1756-57 (Fed. Cir. 2017);

see also Checkpoint Sys., 858 F.3d at 1376.

III.

Analysis

Sprint asks the Court to award its attorneys’

fees from June 12, 2019 to the end of December 2019.

Dkt. No. 475 at 11. June 12, 2019 is significant,

according to Sprint, because this is the date on which

Sprint sent Traxcell a Rule 11 letter explaining how

Traxcell’s infringement theories were objectively

baseless in light of the Court’s claim construction

order. Id. Thus, Sprint argues that its June 12 letter

provided notice to Traxcell that its theories were

baseless and, because of Traxcell’s continued pursuit

of those baseless theories, this case is exceptional

under § 285. 1 Additionally, Sprint argues that this

1 Sprint also argues this case is exceptional because the Court

granted summary judgment of no infringement of the '388

Patent for similar reasons as Sprint offered in its June 19 letter.

App. 19

case is exceptional because Traxcell engaged in

unreasonable litigation tactics: specifically, Sprint

points to Traxcell’s filing of meritless motions. Id. at

6, 13.

In response, Traxcell argues that the claim

construction order was not final when it made its

objections and that it “reassessed” its infringement

theories. For the first argument, Traxcell argues

that…until a district court over-rules objections, a

magistrate’s ruling is not final when there is no

Nettles Notice and objections are made that are not

egregiously late or prejudice the other party.” Dkt No.

494 at 3-4. Thus, Traxcell’s first argument is that it

was not unreasonable for it to maintain its

infringement theories because there was no final

claim construction order until the District Judge

overruled Traxcell’s objections to the claim

construction order on October 9, 2019 (Dkt. No. 451).

For the second argument, Traxcell argues that it

reassessed its infringement positions in light of the

Huawei Case and the Court’s claim construction order

in this case. Id. at 4-7.

The Court finds this case “exceptional” under §

285 based on Traxcell’s pursuit of objectively baseless

infringement theories and filing of meritless motions

that disregarded the earlier rulings. Traxcell’s first

argument was addressed when the Court overruled

Traxcell’s previous untimely claim construction

objections: the Court overruled Traxcell’s objections

Dkt. No. 475 at 7-8. However, the Court declines to find the fact

that Sprint's theories proved correct on summary judgment to

weigh in favor of finding this case exceptional.

App. 20

and specifically cited Fed. R. Civ. P. 72(a) as the basis

for finding Traxcell’s arguments untimely. Dkt. No.

451 at 2. Traxcell’s failure to address Fed. R. Civ. P.

72(a) and its continual repetition of arguments that

the Court has already rejected are among many

examples of Traxcell’s disregard of the Court’s prior

reasoning and orders. The fact that further appeals

are always available does not rescue objectively

baseless positions.

Turning to Traxcell’s second argument,

Traxcell should have known its infringement theories

as to the Network Tuning Patents, including its

changed theories, were unsupported when the Cow1

issued

the

Huawei

R&R.

The

Court’s

recommendation of granting summary judgment to

Nokia was based on Traxcell’s failure to create a

genuine dispute as to whether Nokia’s products

infringed the Court’s construction of the computer

and location limitations of the asserted claims of the

Network Tuning Patents. Because the Court in this

case issued the same constructions for location and

computer as it did in the Huawei Case, Traxcell

should have known its infringement theories in this

case, which were materially equivalent to its theories

in Huawei, were unsupported.

The similarities in Traxcell’s infringement

theories in the Huawei Case and this case are borne

out by comparing the reasoning in the respective

report and recommendations granting summary

judgment. Cf. Huawei, Dkt. No. 386 with Dkt. No.

445. As to the computer limitation, the Court found in

Huawei that Traxcell’s identification of a Graphical

App. 21

User Interface (“GUI”) server as the single computer

did not satisfy the claims because Traxcell did not

show “how a GUI server perform[ed] the tasks of

locating at least one wireless device, referencing

performance, routinely storing performance data and

corresponding locations, receiving an error code from

a radio tower, or suggesting corrective actions.

Huawei, Dkt. No. 386 at 12. Similarly, the Court

found in this case that Traxcell failed to show the

eNodeB computer generated an indication of location

or store that location as required by the claims. Dkt.

No. 445 at 14. Additionally, the Court found that

Traxcell infringement theory revolved around a

network of distributed computers, not a single a

computer as required by the Court’s construction. Id

As to the location limitation, the Court in

Huawei stated, that Traxcell’s theories based on cells

and bins “are merely a position in a grid pattern,” so

they do not satisfy the “location” limitation. Huawei,

Dkt. No. 386 at 9 (internal quotation marks omitted).

Similarly, the Court in this case concluded that

“providing a cell or sector that a given phone falls

within and then using that cell or sector to satisfy the

other limitations is insufficient as it amounts to a

position within a grid pattern.” Dkt. No. 445 at 20.

(citing Dkt. No. 399 at 10).

Although Traxcell argues that it reassessed its

infringement theories, the Court finds that Traxcell

never supported those reassessed theories. Dkt. No.

445 at 21-22. Therefore, the Court finds that

Traxcell’s reassessed theories were just as

unsupported as its original theory.

App. 22

However, the Court does not find the case

exceptional solely for Traxcell’s failure to stop pursing

its unsupported infringement theories: it is Traxcell’s

filing of meritless motions and continually

disregarding the Court’s reasoning that tips the

scales towards finding this case exceptional. For

meritless motions and ignoring the Court’s reasoning,

Traxcell’s attempts (1) to file untimely objections to

the claim construction order; (2) to seek leave to

amend its complaint to assert the corrected Claim 1

of the ‘284 Patent; and (3) to amend its infringement

contentions to include a Doctrine of Equivalents

theory were all meritless.

First, Traxcell attempted to object to the

Court’s claim construction order by moving for leave

to file objections. The Court denied the motion for two

reasons: Traxcell waived its objections under Fed. R.

Civ. P. 72(a) based on its failure to timely file its

objections and (2) the objections were meritless. Dkt.

No. 451 at 3. Thus, the Court found Traxcell’s motions

meritless.

Second, the Certificate of Correction only

addressed one of the two issues the Court found

during claim construction. The Certificate of

Correction failed to address the lack of structure

corresponding to the mean-plus-function language in

the claim. Because the Certificate of Correction did

not correct the mean-plus-function issue, the Court in

this case, and the Federal Circuit on appeal, found

that it would be “futile” to allow Traxcell to assert the

corrected claim. Dkt. Nos. 209, 219; Traxcell

Technologies, LLC v. Sprint Comm. ‘s Co. LP. l 5 F.4th

App. 23

1121, 1 134 (Fed. Cir. 2021 ). Thus, the Court denied

Traxcell’s motion to amend its complaint as meritless.

Relatedly, Traxcell decided to disregard the

Court’s order denying this relief when it continued to

assert both the invalid and corrected claim during fact

discovery, expert discovery, and even planned on

asserting it at trial, as shown in the Joint Pretrial

Order. Dkt No. 391 at 4-5. Although Traxcell argues

that it could continue to assert the invalid claim

because the Court’s claim construction order was

subject to objections, as explained above, the Court

found those objections meritless and therefore they

cannot serve as an objectively reasonable basis to

assert the invalidated claim. Traxcell also had no

reasonable basis to assert the corrected claim because

it only addressed one of the two issues the Court

found during claim construction.

Third, Traxcell moved for leave to include a

Doctrine of Equivalents theory of infringement of the

computer limitation. Dkt. No. 210. This is particularly

egregious because the motion ignored the Court’s

reasoning in the Huawei R&R, which clearly stated

that prosecution history estoppel barred application

of the Doctrine of Equivalents to the computer

limitation. Thus, Traxcell should have known that its

motion was meritless before it was filed.

Traxcell argues that it believed that “there was

a viable argument under the Doctrine of Equivalents”

because the Court’s claim construction order in this

case did not explicitly find disclaimer. Dkt. No. 496 at

8 (citing Dkt. No. 171 at 18). Again, the Court made it

App. 24

clear in Huawei that statements in the prosecution

history limited the term computer to a single

computer; therefore, Traxcell ignored the Court’s

reasoning when seeking leave to amend.

Traxcell’s remaining arguments do not weigh

against finding this case exceptional. First, Traxcell

argues that it never accepted or sought “nuisance

value settlements.” Dkt. No. 494 at 14. Although the

Federal Circuit has found seeking nuisance value

settlements can weigh in favor of finding a case

exceptional, AdjustaCam, LLC v. Newegg, Inc., 861

F.3d 1353, 1362 (Fed. Cir. 2017), the Court does need

to find that Traxcell sought nuisance value

settlements in order to find the case exceptional.

Second, Traxcell argues that Sprint should be

precluded from being awarded its fees because it has

“unclean hands.” Dkt. No. 506 at 1. Traxcell’s unclean

hands argument is based on Sprint allegedly

withholding documents during discovery. Id.

However, the Court denied Traxcell’s motion to

compel (Dkt. No. 205) because Traxcell’s document

request was “overly broad and not proportional to the

needs of this case” and “Traxcell also failed to clearly

articulate any inadequacies in the production already

made by [Sprint]”. Dkt. No. 254 at 2. This is yet

another meritless and unsupported argument that

disregards the Court’s reasoning.

Because the Court has found the case

exceptional, the only remaining issue is the amount

to be awarded. At no point does Traxcell argue that

the specific hourly rates or times billed by Sprint’s

App. 25

counsel were unreasonable. Because Traxcell does not

question the reasonableness of the hourly rates or

times billed by Sprint’s counsel, the Court also does

not question the reasonableness of the rates or times.

Although Sprint seeks its fees from July 12,

2019 to the end of December, the Court finds the case

became exceptional around July 22, 2019, when the

Court denied Traxcell’s motion to amend its

infringement contentions. It was at this point that

Traxcell should have objectively known it’s

infringement theories could not succeed. Therefore,

the Court awards Sprint its fees incun-ed from

August 1, 2019 to December 31, 2019, which total

$784,529.16 based on the totals listed in Dkt. No. 4754.

IV.

Conclusion

It is therefore ORDERED that Traxcell pay to

Sprint its fees from August I to December 31, 2019,

which amount to a total of $784,529.16, within 30

days of this Order.

SIGNED this 29th day of March, 2022.

ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE

App. 26

APPENDIX E

IN THE UNITED STATES DISTRICT

COURT FOR THE EASTERN DISTRICT OF

TEXAS MARSHALL DIVISION

TRAXCELL TECHNOLOGIES, LLC.,

Plaintiff,

v.

AT&T CORP. and AT&T MOBILITY LLC,

Case No. 2:17-cv-00718-RWS-RSP

(LEAD CASE)

SPRINT COMMUNICATIONS

COMPANY. LP, SPRINT SPECTRUM, LP,

and SPRINT SOLUTIONS, INC.,

Case No. 2:17-cv-00719-RWS-RSP

(MEMBER CASE)

VERIZON WIRELESS PERSONAL

COMMUNICATIONS, LP,

Defendants.

Case No. 2:l7-cv-00721-RWS-RSP

(MEMBER CASE)

App. 27

MEMORANDUM ORDER

Before the Court is the Motion for Attorneys’

Fees

filed

by

Verizon

Wireless

Personal

Communications LP. Dkt. No. 476. Having considered

the briefing, Verizon’s motion is GRANTED IN PART.

I.

Background

On October 31, 2017, Plaintiff Traxcell

Technologies, LLC filed its complaint, which alleged

infringement of U.S. Patent Nos. 8,977,284 (the ‘284

Patent”), 9,510,320 (the ‘320 Patent), 9,642,024 (the

‘024 Patent) (the “Network Tuning Patents”), and

U.S. Pat. No. 9549,388 (the ‘“388 Patent”)

(collectively, the “Asserted Patents”). Dkt. No. 1. The

present case-which was consolidated with lead case

Traxcell v. AT&T Corp. et al., Case No. 2:17-cv-00718RWS- RSP (hereinafter the “AT&T Case”)-is the

second in a series of cases involving the Network

Tuning Patents; therefore, the Court will review the

facts from the first case because they relate to issues

raised by the parties.

a.

Huawei Case

Prior to the filing of this suit, Traxcell

previously brought claims of infringement of the

Network Tuning Patents against two parties in this

Court: Nokia Solution and Networks US LLC and

Nokia Solutions and Networks Oy (collectively,

“Nokia”) in Traxcell v. Nokia, Case No. 2:17-cv-00044R WS-RSP (hereinafter the “Nokia Case”), Dkt. Nos.

1, 10, and against Huawei Technologies USA Inc. in

App. 28

Traxcell v. Huawei et al., Case No. 2:l7-cv-00042RWS-RSP (hereinafter “Huawei Case”). Huawei, Dkt.

No. 1. The Huawei Case and Nokia Case were

consolidated for pre-trial matters and the Huawei

Case was designated the lead case.

On January 7, 2019, the Court issued a claim

construction order in the Huawei case. Huawei, Dkt.

No. 261. Relevant to this motion, the Court construed

the terms “computer” and “location’” and also

determined that Claim l of the ‘284 Patent was

indefinite. Id. The Court construed ·’computer” to

mean “single computer” and “first computer” to mean

“first single computer.” Dkt. No. 261 at 18. These

constructions were based on the patentee’s

statements in the prosecution history of the ‘284

Patent. Id. at 15, 17.

For the term “location,” the Court construed

the term to mean “location that is not merely a

position in a grid pattern.” Dkt. No. 261 at 23. The

Court reached this construction also based on

statements made by the patentee in the prosecution

history of the asserted patent. Id. at 22. Based on

those statements, the Court concluded that the patent

applicant distinguished the claimed invention from

the prior art references and represented that the

“location” of the claimed invention is therefore not

merely a position in a grid pattern. Id.

Traxcell failed to timely object to the Court’s

claim construction order, and the Court later denied

Traxcell’s motion for leave to file objections because

App. 29

Traxcell provided no reason for its 6 month delay.

Huawei, Dkt. No. 405.

On May 15, 2019, the Court issued a Report

and Recommendation (the “Huawei R&R”) that

recommended granting summary judgment of noninfringement to Nokia because the Court found that

there was no genuine dispute of material facts that

Nokia’s products did not infringe the location and

computer limitations. Huawei, Dkt. No. 386. As to the

location limitation, the Court found that Traxcell’ s

infringement theory was based on SO-meter-by-SOmeter bins and geographic cells. Id. at 9. The Court

found that bins and cells amounted to merely a

position in a grid pattern, which is contrary to the

Court’s construction. Id. As to the computer

limitation, the Court found that Traxcell’s evidence

showed that multiple computers were needed to meet

the claim limitations. Id. at 12. Additionally, the

Court found that “prosecution history estoppel bars

the application of the Doctrine of Equivalents here,

and [Traxcell] is precluded from asse11ing that the

‘first computer’ and ‘computer’ limitations may be

satisfied by multiple computers.’’ Id. at 14.

On May 29, 2019, Traxcell timely filed

objections to the Com1’s recommendation of summary

judgment of non-infringement. Huawei, Dkt. No. 389.

Although Traxcell did file objections to the Court’s

application of prosecution history estoppel, the

objections were directed towards the Court’s

construction of computer, not the Court’s grant of

summary judgment itself. Id. at 5-8. When the

District Judge adopted the recommendation of

App. 30

summary judgment on December 11, 2019, he

specifically found that Traxcell’s objections to the

Claim Construction Order were untimely and

therefore waived. Huawei, Dkt. No. 411 at 3.

b.

AT&T Case

Turning to this case, the Court issued a claim

construction order on April 15, 2019. Dkt. No. 171.

Traxcell agreed in this case to the same construction

of “location” that was issued in the Huawei Case,

which was “a location that is not merely a position in

a grid pattern’’ Id. at 12-13. Although Traxcell offered

new arguments as to the computer limitation, the

Court ultimately provided the same construction for

computer as it did in the Huawei Case. Id. at 16-18.

Finally, the Comi again found Claim I of the ‘284

Patent was indefinite. Id. at 27. As in the Huawei

Case, Traxcell failed to timely object to the Claim

Construction Order. Dkt. No. 451 at 3.

On May 7, 2019, Traxcell received a Certificate

of Correction for the ‘284 Patent. Dkt. No. 182. After

receiving the Certificate of Correction, Traxcell

moved to assert the corrected Claim 1 of the ‘284

Patent by filing a motion for leave to fi1e an amended

complaint. Dkt. No. 188. The Court denied the motion

because the Court determined during claim

construction that Claim 1 contained “a means-plusfunction term and that the specification did not

adequately disclose sufficient structure to perform the

recited function, making Claim 1 indefinite ... and

[that] the proposed amendments to the complaint do

App. 31

not cure the indefiniteness issues regarding the

means- plus-function term.” Dkt. No. 209 at 2.

On June 19, 2019, Traxcell filed a motion for

leave to supplement its infringement contentions

with a Doctrine of Equivalents theory although the

Court made it clear in the Huawei R&R that

prosecution history estoppel barred the Doctrine of

Equivalents. Dkt. No. 210. On July 22, 2019, the

Court denied Traxcell’s motion for leave to

supplement its infringement contentions for two

reasons: (1) Traxcell did not show good cause for filing

the supplemental infringement contentions and (2)

the Court concluded that “the proposed supplemental

infringement contentions would be futile” in light of

the Court’s claim construction order in the Huawei

Case. Dkt. No. 254 at 3. Furthermore, the Court

stated in its Order denying leave that “Traxcell has

not identified any persuasive reason why the Court

would reach a different conclusion within this case.

As such, the Com1 concludes that prosecution history

estoppel similarly applies in this case and precludes

the application of the Doctrine of Equivalents,

making the proposed supplemental infringement

contentions futile.” Id. at 4.

On September 18, 2019, the Court issued a

Report and Recommendation that recommended

granting summary judgment of non-infringement of

the ‘024 Patent because Traxcell failed to create a

genuine dispute as to whether Verizon’s products

infringed the computer and location limitations in the

asserted claims of the ‘024 Patent. Dkt. No. 399. On

October 7, 2019, the Court issued a Report and

App. 32

Recommendation that recommended granting

summary judgment of non-infringement of the ‘388

Patent. Dkt. No. 444. On April 15, 2020, the District

Judge overruled Traxcell’s objections and adopted

both Repo11 and Recommendations. Dkt. No. 471.

II.

Legal Standard

Pursuant to the Patent Act, in “exceptional

cases,” a district court “may award reasonable

attorney fees to the prevailing party.” 35 U.S.C. § 285.

An “exceptional case· is “simply one that stands out

from others with respect to the substantive strength

of a party’s litigating position ... or the unreasonable

manner in which the case was litigated.” Octane

Fitness, LLC v. ICON Health & Fitness. Inc., 572 U.S.

545, 134 S. Ct. 1749, 1756, 188 L. Ed. 2d 816 (2014);

see also Highmark Inc. v. Allcare Health Mgmt. Sys.,

Inc., 572 U.S. 559, 134 S. Ct. 1744, 1748, 188 L. Ed.

2d 829 (2014) (noting that “the word ‘exceptional’ in§

285 should be interpreted in accordance with its

ordinary meaning” (citing Octane Fitness, l34 S. Ct. at

1755)).

District courts must determine whether any

particular case is “exceptional” in a “case-by- case

exercise of their discretion, considering the totality of

the circumstances.” Octane Fitness, 134 S. Ct. at 1756.

Whether a case is “exceptional” or not “is a factual

determination,” Forcillo v. Lemond Fitness, Inc., 168

F. App’x 429, 430 (Fed. Cir. 2006), and the court must

make its determination by a “preponderance of the

evidence,” Octane Fitness, 134 S. Ct. at 1758 (rejecting

the prior requirement that a patent litigant establish

App. 33

its entitlement to fees under § 285 by “clear and

convincing” evidence).

In assessing the “totality of the circumstances,”

courts may consider factors such as “frivolousness,

motivation, objective unreasonableness (both in the

factual and legal components of the case) and the need

in particular circumstances to advance considerations

of compensation and deterrence.” Octane Fitness, 134

S. Ct. at 1756 n.6 (citing Fogerty v. Fantasy, Inc., 510

U.S. 517, 534 n.9, 114 S. Ct. 1023, 127 L. Ed. 2d 455

(1994) (addressing a similar fee-shifting provision in

the Copyright Act). A party’s conduct need not be

independently sanctionable to warrant an award of

fees under § 285; however, fee awards should not be

used “as a penalty for failure to win a patent

infringement suit.” Romag Fasteners, Inc. v. Fossil,

Inc., 866 F.3d 1330, 1753, 1756-57 (Fed. Cir. 2017);

see also Checkpoint Sys., 858 F.3d at 1376.

III.

Analysis

Verizon asks the Court to award its attorneys’

fees from the issuance of the claim construction order

on April 15, 2019 through October 2019. Dkt. No. 476

at 1. Verizon chose the issuance of the claim

construction order as the point this case became

exceptional because Verizon argues that Traxcell’s

infringement theories became objectively baseless in

light of the claim construction order. Id. at 3.

Furthermore, Verizon argues that it made clear to

Traxcell that its theories were baseless in its May 23,

2019 Rule 11 letter to Traxcell, which specifically

explained how Verizon’s products did not infringe the

App. 34

Asserted Patents. Id. (citing Dkt. No. 476-25). Thus,

Verizon’s argument is that this case became

exceptional under § 285 when Traxcell continued to

maintain its infringement theories after claim

construction.

In addition to the baseless infringement

theories, Verizon argues that this case is exceptional

because of Traxcell’s litigation misconduct that

improperly prolonged the suit.

Specifically. Verizon points to Traxcell

asserting both the invalid and “corrected” Claim J of

the ‘284 Patent, Id. at 4-5; attempting to amend its

complaint to assert the corrected Claim 1, Id. at 5;

filing untimely and meritless claim construction

objections, Id.; and finally asserting a baseless

Doctrine of Equivalents argument. Id. at 5-6.

ln response, Traxcell argues that the claim

construction order was not final when it made its

objections and that it “reassessed” its infringement

theories. For the first argument, Traxcell argues that,

‘‘until a district court overrules objections, a

magistrate’s ruling is not final when there is no

Nettles Notice and objections are made that are not

egregiously late or prejudice the other party.” Dkt.

No. 496 at 3-4. Thus, Traxcell’s first argument is that

it was not unreasonable for it to maintain its

infringement theories because there was no final

claim construction order until the District Judge

overruled Traxcell’s objections to the claim

construction order on October 9, 2019 (Dkt. No. 451).

For the second argument, Traxcell contends that it

App. 35

withdrew an entire patent and several claims during

the course of the litigation, and furthermore, it

reassessed its infringement positions in light of the

Court’s claim construction order in this case and in

the Huawei Case. Id. at 4-5.

The Court finds this case “exceptional” under §

285 based on Traxcell’s pursuit of objectively baseless

infringement theories and filing of meritless motions

that disregarded the earlier rulings. Traxcell’s first

argument was addressed when the Court overruled

Traxcell’s previous untimely claim construction

objections: the Court overruled Traxcell’s objections

and specifically cited Fed. R. Civ. P. 72(a) as the basis

for finding Traxcell’s arguments untimely. Dkt. No.

451 at 2. Traxcell’s failure to address Fed. R. Civ. P.

72(a) and its continual repetition of arguments that

the Court has already rejected are among many

examples of Traxcell’s disregard of the Court’s prior

reasoning and orders. The fact that further appeals

are always available does not rescue objectively

baseless positions.

Turning to Traxcell’s second argument,

Traxcell should have known its infringement

theories, including its changed theories, in this case

were unsupported when the Court issued the Huawei

R&R. The Court’s recommendation of granting

summary judgment to Nokia was based on Traxcell’s

failure to create a genuine dispute as to whether

Nokia’s products infringed the Court’s construction of

the computer and location limitations. Because the

Court in this case issued the same constructions for

location and computer as it did in the Huawei Case,

App. 36

Traxcell should have known its infringement theories

in this case, which were materially equivalent to its

theories in Huawei, were unsupported.

The similarities in Traxcell’s infringement

theories in the Huawei Case and this case are borne

out by comparing the reasoning in the respective

report and recommendations granting summary

judgment. Cf. Huawei, Dkt. No. 386 with Dkt. No.

399. As to the computer limitation, the Court found in

Huawei that Traxcell’s identification of a Graphical

User Interface (“GUI”) server as the single computer

did not satisfy the claims because “the GUI server is

simply the interface that a user interacts with to

display data without even storing it.” Huawei, Dkt.

No. 386 at l 2. Similarly, the Court found in this case

that Traxcell’s identification of the SON (“Se]fOrganizing Network’’) Portal did not meet the

computer limitation because the “SON Portal server

merely acts as an interface that users may use to

access the individual services of other SON servers.”

Dkt. No. 399 at 7.

As to the location limitation, the Court in

Huawei stated, “the use of 50-meter-by-50-meter bins

and geographic cells does not amount to a location

under the Court’s construction.” Huawei, Dkt. No. 386

at 9. Similarly, the Court in this case concluded that

“a bin or a sector within that bin both amount to

position within a grid pattern. Therefore, the use of

these bins does not satisfy the ‘location’ limitation as

construed by the Court.” Dkt. No. 399 at 8.

App. 37

Although Traxcell argues that it reassessed its

infringement theories, the Court finds that Traxcell

only provided a different infringement theory of the

location limitation in this case. However, the Court

further finds that Traxcell’s reassessed theory is just

as unsupported as its original theory. Traxcell’s

reassessed theory was that Verizon’s products

infringed the location term because the products used

the distance from a known point to determine a

location for each device. Dkt. No. 496 at 5-6. However,

the Court rejected this theory at summary judgment

because Traxcell improperly conflated distance from

a known point with location, even though the

Network Tuning Patents clearly treat distance and

location as two distinct concepts. Dkt. No. 399 at 8.

Thus, Traxcell simply went from one unsupported

infringement theory to another.

However, the Court does not find the case

exceptional solely for Traxcell’s continued reliance on

unsupported infringement theories: it is Traxcell’s

filing of meritless motions and continual disregard of

the Court’s reasoning that tips the scales towards

finding this case exceptional. Traxcell’s attempts (1)

to file untimely objections to the claim construction

order; (2) to seek leave to amend its complaint to

assert the corrected Claim 1 of the ‘284 Patent; and

(3) to amend its infringement contentions to include a

Doctrine of Equivalents theory were all meritless.

First. Traxcell attempted to object to the

Court’s claim construction order by moving for leave

to file objections. The Court denied the motion for two

reasons: Traxcell waived its objections under Fed. R.

App. 38

Civ. P. 72(a) based on its failure to timely file its

objections and (2) the objections were meritless. Dkt.

No. 451 at 3. Thus, the Court found Traxcell’s motion

meritless.

Second, the Certificate of Correction only

addressed one of the two indefiniteness issues the

Court found during claim construction. The

Certificate of Correction failed to address the lack of

structure corresponding to the mean-plus-function

language in the claim. Because the Certificate of

Correction did not correct the mean-plus-function

issue, the Court in this case, and the Federal Circuit

on appeal, found that it would be “futile” to allow

Traxcell to assert the corrected claim. Dkt. Nos. 209.

219; Traxcell Technologies, LLC v. Sprint Comm. ‘s

Co. LP, 15 F.4th 1121, I 134 (Fed. Cir. 2021). Thus,

the Court denied Traxcell’s motion to amend its

complaint as meritless.

Relatedly, Traxcell decided to ignore the

Court’s order denying this relief when it continued to

assert both the invalid and corrected claim during fact

discovery, expert discovery, and even planned on

asserting it at trial, as shown in the Joint Pretrial

Order. Dkt. No. 392 at 5. Although Traxcell argues

that it could continue to assert the invalid claim

because the Court’s claim construction order was

subject to objections, as explained above, the Court

found those objections meritless and therefore they

cannot serve as an objectively reasonable basis to

assert the invalidated claim. Traxcell also had no

reasonable basis to assert the corrected claim because

App. 39

it only addressed one of the two issues the Court

found during claim construction.

Third, Traxcell moved for leave to include a

Doctrine of Equivalents theory of infringement of the

computer limitation. Dkt. No. 210. This is particularly

egregious because the motion ignored the Court’s

reasoning in the Huawei R&R, which clearly stated

that prosecution history estoppel barred application

of the Doctrine of Equivalents to the computer

limitation. Thus, Traxcell should have known that its

motion was meritless before it was filed.

Traxcell argues that it believed that “there was

a viable argument under the Doctrine of Equivalents”

because the Court’s claim construction order in this

case did not explicitly find disclaimer. Dkt. No. 496 at

7 (citing Dkt. No. 171 at 18). Again, the Court made it

clear in Huawei that statements in the prosecution

history limited the term computer to a single

computer; therefore, Traxcell ignored the Court’s

reasoning when seeking leave to amend.

Furthermore, Traxcell’s frivolous Doctrine of

Equivalents argument prejudiced Verizon when

Traxcell served an expert report opining on the

Doctrine of Equivalents on June 17, two days before

it sought leave to amend its contentions. Dkt. No. 476

at 6. This act not only ignores the Court’s reasoning,

it created prejudice to Verizon by forcing it to provide

expert testimony to respond to an objectively

unsupported infringement theory.

App. 40

Traxcell’s remaining arguments do not weigh

against finding this case exceptional. Traxcell argues

that it never accepted or sought “nuisance value

settlements,” Dkt. No. 496 at 14, and that Verizon

should be precluded from being awarded its fees

because “the true purpose of Verizon’s motion is to

limit Traxcell’s access to the courthouse.” Id at 15.

Although the Federal Circuit has found seeking

nuisance value settlements can weigh in favor of

finding a case exceptional, AdjustaCam, LLC v.

Newegg, Inc., 86 t F.3d 1353, 1362 (Fed. Cir. 2017),

the Court does need to find that Traxcell sought

nuisance value settlements in order to find the case

exceptional.

For the latter argument, the Supreme Court

was clear in Octane Fitness that the Court can award

fees based on “the need in particular circumstances to

advance considerations of compensation and

deterrence.” Id. at 134 S. Ct. at 1756 n.6.

Furthermore, Verizon argues that the Court award

its fees “to deter future frivolous lawsuits and

improper conduct by Traxcell,” not bar Traxcell’s

access to the courthouse. Dkt. No. 476 at 15. The

Court agrees with Verizon and finds that deterring

Traxcell from disregarding the Court’s reasoning in

future cases before this Cow1 is another factor that

weighs in favor of awarding fees.

Because the Court has found the case

exceptional, the only remaining issue is the amount

to be awarded. At no point does Traxcell argue that

the specific hourly rates or times billed by Verizon·s

counsel were unreasonable. Because Traxcell does not

App. 41

question the reasonableness of the hourly rates or

times billed by Verizon’s counsel, the Court also does

not question the reasonableness of the rates or times.

Although Verizon seeks its fees from April 15,

2019 to the end of October 2019, the Court finds the

case became exceptional around July 22, 2019, when

the Court denied Traxcell’s motion to amend its

infringement contentions. It was at this point that

Traxcell should have objectively known its

infringement theories could not succeed. Therefore,

the Court awards Verizon its fees from August I to

October 31, 2019, which totals $132,046.50 based on

the amounts listed in Dkt. Nos. 476-2; 476-6; and 47622.

IV.

Conclusion

It is ORDERED that Traxcell pay to Verizon

its fees from August 1 to October 31, 2019, which

amount to a total of $132,046.50, within 30 days of

this Order.

SIGNED this 29th day of March, 2022.

ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE

App. 42

APPENDIX F

NOTE: This order is nonprecedential.

United States Court of Appeals

for the Federal Circuit

TRAXCELL TECHNOLOGIES, LLC,

Plaintiff-Appellant

v.

AT&T INC.,

Defendant

SPRINT COMMUNICATIONS COMPANY LP,

SPRINT SPECTRUM, LP, SPRINT SOLUTIONS,

INC., VERIZON WIRELESS PERSONAL

COMMUNICATIONS, LP,

Defendants-Appellees

2023-1246, 2023-1436

Appeals from the United States District Court for

the Eastern District of Texas in Nos. 2:17-cv-00718RWS-RSP, 2:17-cv-00719-RWS-RSP, 2:17-cv-00721RWS-RSP, Judge Robert Schroeder, III.

ON PETITION FOR REHEARING EN BANC

Before MOORE, Chief Judge, NEWMAN, LOURIE,

DYK, PROST, REYNA, TARANTO, CHEN,

HUGHES, STOLL, CUNNINGHAM, and STARK,

Circuit Judges.

App. 43

PER CURIAM.

ORDER

Traxcell Technologies, LLC filed a petition for

rehearing en banc. The petition was referred to the

panel that heard the appeal, and thereafter the

petition was referred to the circuit judges who are in

regular active service.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue September

5, 2023.

August 29, 2023

Date

FOR THE COURT

/s/ Jarrett B. Perlow

Jarrett B. Perlow

Clerk of Court

App. 44